Krig, Scott et al.

Patent Trials and Appeals Board

Mar 30, 2020

13977293 - (D) (P.T.A.B. Mar. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/977,293 11/15/2013 Scott Krig 884.K12US1 7231
45457 7590 03/30/2020
SCHWEGMAN LUNDBERG & WOESSNER/Intel
P.O. Box 2938
MINNEAPOLIS, MN 55402
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/30/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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uspto@slwip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT KRIG, MADAN VENUGONAL, and VISHWA HASSAN
____________

Appeal 2019-002444
Application 13/977,293
Technology Center 3600
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–7, 9–17, 19–27, and 29–33, which constitute all
pending claims. Appeal Br. 39–46 (Claims App.). Appellant has canceled
claims 8, 18, and 28. Appellant’s Preliminary Amendment 4, 7, 10 (filed
June 28, 2013). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Intel Corporation as the real party in interest.
Appeal Br. 2.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed September 26, 2018, “Appeal Br.”), the
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STATEMENT OF THE CASE
The claims relate to a product management service that receives
information on products purchased by consumers, associates such
information with consumer accounts, and automatically manages consumer
obligations, such as rebates and warranties, with respect to products. Spec.
¶ 12.
Invention
Claims 1, 11, and 21 are independent. Claim 1 is illustrative and is
reproduced below.
1. A system for providing a product management
service, the system comprising:
a network-reachable product management service
comprising a processor configured to at least:
receive from a point of sale terminal, over a network,
product and consumer information as part of a sale of a product
described by the product information, the consumer information
received by the point of sale terminal from a Radio Frequency
Identification (RFID) device of the consumer;
associate the consumer information with a consumer
account;
update the consumer account with the product
information responsive to associating the consumer information
with the consumer account using a computer processor;
request, over a network, warranty registration
requirements from a warranty registration service;
receive warranty registration requirements from the
warranty registration service, the warranty registration

Reply Brief (filed February 4, 2019, “Reply Br.”), the Examiner’s Answer
(mailed December 13, 2018, “Ans.”), the Non-Final Office Action (mailed
February 26, 2018, “Non-Final”), and the Specification (filed June 28, 2013,
“Spec.”) for their respective details.
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requirements detailing product information and consumer
information to register the product;
select a portion of the product information and a portion
of the consumer information that meets the warranty
registration requirements;
send a product registration request including the portion
of the product information and the portion of the consumer
information over the network to a warranty registration service
to register the product described by the product information for
a product warranty;
receive a confirmation that the product warranty was
registered;
determine, via communications over the network with a
rebate service, that a rebate is applicable to the product
information and responsive to determining that the rebate is
applicable to the product information, sending at least a portion
of the product information and at least a portion of the
consumer information over the network to the rebate service to
apply for the rebate;
receive a confirmation from the rebate service that the
rebate was processed successfully;
set a follow-up reminder responsive to receiving the
confirmation from the rebate service;
check a status of the rebate by communicating over the
network with the rebate service on expiry of the follow-up
reminder; and
notify a consumer associated with the consumer account
of the status of the rebate responsive to checking the status of
the rebate.
Appeal Br. 39–40 (Claims App.).
References and Rejections
The Examiner rejected Claims 1, 11, and 21 under 35 U.S.C. § 112(b)
as being indefinite for failing to particularly point out and distinctly claim
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the subject matter which the inventor or a joint inventor regards as the
invention. Non-Final 8–9.
The Examiner rejected Claims 1–7, 9–17, 19–27, and 29–33 under
35 U.S.C. § 101 as directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Id. at
3–8.
The Examiner rejected Claims 1–7, 9–17, 19–27, and 29–33 under
35 U.S.C. § 103 as being unpatentable over Abreu (US 2010/0145730 A1;
June 10, 2010), Levy et al. (US 2013/0066698 A1; Mar. 14, 2013) (“Levy”),
Milovanovic (US 2002/0035608 A1; Mar. 21, 2002), and Press Release,
Texas Instruments, Mobil’s Speedpass Makes Pumping Easier and Quicker
with New Technology at the Gas Pump (Mar. 1997) (“Mobil’s SpeedPass”).
Id. at 9–24.
ANALYSIS
In making our decision, we have reviewed the rejections of claims 1–
7, 9–17, 19–27, and 29–33 and considered Appellant’s arguments. We have
considered only those arguments Appellant actually raised in the Briefs.
Appellant has waived any argument they could have made but chose not to
in the Briefs. See 37 C.F.R. § 41.37(c)(1)(iv).
CLAIMS 1, 11, AND 21: INDEFINITENESS.
The Examiner determines that claims 1, 11, and 21 are indefinite
because “the first limitation recites that the consumer information is received
from an RFID device, however, based on the way it is claimed, it is unclear
whether the RFID device is part of the system.” Non–Final 9. Appellant
argues that “the claim is clear as it does not recite the RFID device of the
consumer as part of the system of claim 1,” but “[r]ather, it specifically
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recites that the POS device receives the information from an RFID device of
the consumer.” Appeal Br. 22–23 (emphasis omitted). Appellant explains
that “[i]n order to receive this information the point of sale terminal must
read the RFID device of the consumer.”
We agree with Appellant. A person of ordinary skill in the computer
arts would understand from a plain reading of the claim that the “RFID
device” is not part of the claimed system itself but rather an external device
from which the recited POS terminal receives data.
The Examiner determines that claims 1, 11, and 21 are
indefinite for another reason as well—“because there is no clear tie between
the limitations that relate to a rebate service and the limitations that relate to
a warranty registration service.” Non-Final 9. The Examiner explains that
“[t]hese limitations are completely separate and distinct and have absolutely
no tie to each other. The warranty registration service limitations do not
mention anything about rebate services, nor do the rebate services discuss
warranty registrations.” Id.
Appellant argues that “one of ordinary skill, looking at the claim in
light of the specification would clearly understand what is covered by the
claims.” Appeal Br. 24. Appellant explains that “[t]he product information
and customer information received from the POS device is sent both to a
product registration service to register the product and separately to a rebate
service to check for rebates and apply for a rebate if one is available.” Id.
We agree with Appellant. Although the warranty registration service
and rebate service limitations describe different features, a person of
ordinary skill in the computer arts would understand from a plain reading of
the claim that each of these features may be implemented as part of
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Appellant’s overall system. Moreover, contrary to the Examiner’s position,
the warranty registration service and rebate service limitations are tied at
least because both use the same customer information and product
information received from the POS device in order to make determinations.
And even if the two services were not tied as such, “it is not essential to a
patentable combination that there be interdependency between the elements
of the claimed device or that all the elements operate concurrently toward
the desired result.” Ex parte Nolden, 149 USPQ 378, 380 (BPAI 1965). In
other words, “[a] claim does not necessarily fail to comply with 35 U.S.C.
112, second paragraph where the various elements do not function
simultaneously, are not directly functionally related, do not directly
intercooperate, and/or serve independent purposes.” MPEP 2172.01 (citing
Ex parte Huber, 148 USPQ 447, 448–49 (BPAI 1965)).
In view of the foregoing, we decline to sustain the rejection of claims
1, 11, and 21 under 35 U.S.C. § 112(b).
CLAIMS 1–7, 9–17, 19–27, AND 29–33: INELIGIBLE SUBJECT MATTER.
Appellant argues these claims as a group. Appeal Br. 11–22; Reply
Br. 3–7. Therefore, we decide the appeal of the § 101 rejection of claims 1–
7, 9–17, 19–27, and 29–33 with reference to illustrative claim 13 and refer to
the rejected claims collectively herein as “the claims.” See 37 C.F.R.
§ 41.37(c)(1)(iv); In re Marco Guldenaar Holding B.V., 911 F.3d 1157,
1162 (Fed. Cir. 2018).
We reviewed the record de novo. SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn

3 Our § 101 analysis for claim 1 applies equally to claims 2–7, 9–17, 19–27,
and 29–33, which are not argued separately with particularity.
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to patent-eligible subject matter is an issue of law that we review de novo.”).
Based on our review of the record in light of recent policy guidance on
patent subject matter eligibility under 35 U.S.C. § 101,4 we sustain the § 101
rejection of claims 1–7, 9–17, 19–27, and 29–33 for the specific reasons
discussed below.
35 U.S.C. § 101
Section 101 provides that a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes “[l]aws of nature,
natural phenomena, and abstract ideas” from the realm of patent-eligible
subject matter, as monopolization of these “basic tools of scientific and
technological work” would stifle the very innovation that the patent system
aims to promote. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–78 (2012); Diamond v. Diehr, 450
U.S. 175, 185 (1981).
Under the mandatory Revised Guidance, we reconsider whether
Appellant’s claims recite:
1. any judicial exceptions, including certain groupings of abstract ideas

4 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance” or “Rev. Guid.”); see
also USPTO, October 2019 Patent Eligibility Guidance Update (Oct. 17,
2019), https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
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(i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental
processes), and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim, (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then reach the
issue of whether the claim:
3. adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
4. simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

A. Whether the claims recite a judicial exception.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract-idea
exception includes the following groupings of subject matter, when recited
as such in a claim limitation(s) (that is, when recited on their own or per se):
(a) mathematical concepts,5 i.e., mathematical relationships, mathematical

5 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . .
reduced to a mathematical formula . . . is an unpatentable abstract idea.”).
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formulas, equations,6 and mathematical calculations7; (b) certain methods of
organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions)8; and (c) mental processes—concepts performed in the human
mind (including observation, evaluation, judgment, opinion).9
The preamble of independent claim 1 recites: “A system for providing
a product management service, the system comprising.” The limitations
recited in the body of the claim are analyzed in Table I against the categories
of abstract ideas as set forth in the Revised Guidance.

6 Diehr, 450 U.S. at 191 (“A mathematical formula as such is not accorded
the protection of our patent laws”); Parker v. Flook, 437 U.S. 584, 594
(1978) (“[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.”).
7 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a “series of mathematical calculations based on
selected information” are directed to abstract ideas).
8 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate
settlement risk is a “fundamental economic practice” and thus an abstract
idea); see Revised Guidance, at 52 n.13 for a more extensive listing of
“certain methods of organizing human activity” that have been found to be
abstract ideas.
9 Mayo, 566 U.S. at 71 (“‘[M]ental processes[ ] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work’” (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972))).
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Claim 1 Revised Guidance
[a]10 receive . . . product and
consumer information as part of a
sale of a product described by the
product information, the consumer
information received by . . . the
consumer;
Insignificant extra-solution
activity, e.g., mere data-gathering.
Rev. Guid., 84 Fed. Reg. at 55 n.31.
[b] associate the consumer
information with a consumer
account;
Mental processes—concepts
performed in the human mind or
with pen and paper (including an
observation, evaluation, judgment,
opinion). Id. at 52.
[c] update the consumer
account with the product
information responsive to
associating the consumer
information with the consumer
account . . . ;
Mental processes—concepts
performed in the human mind or
with pen and paper (including an
observation, evaluation, judgment,
opinion). Id.
[d] request . . . warranty
registration requirements . . . ;
Insignificant extra-solution
activity, e.g., mere data-gathering.
Id. at 55 n.31.
[e] receive warranty
registration requirements . . . , the
warranty registration requirements
detailing product information and
consumer information to register the
product;
Insignificant extra-solution
activity, e.g., mere data-gathering.
Id.
[f] select a portion of the
product information and a portion of
the consumer information that
meets the warranty registration
requirements;
Mental processes—concepts
performed in the human mind or
with pen and paper (including an
observation, evaluation, judgment,
opinion). Id. at 52.
[g1] send a product
registration request including the
portion of the product information
and the portion of the consumer
information . . .
Insignificant extra-solution
activity, e.g., mere data-gathering.
Id. at 55 n.31.

10 Step designators, e.g., “[a],” are added to facilitate discussion.
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[g2] to register the product
described by the product
information for a product warranty;
Mental processes—concepts
performed in the human mind or
with pen and paper (including an
observation, evaluation, judgment,
opinion). Id. at 52.
[h] receive a confirmation
that the product warranty was
registered;
Insignificant extra-solution
activity, e.g., post-solution activity.
Id. at 55 n.31.
[i1] determine . . . that a
rebate is applicable to the product
information and
Certain methods of
organizing human activity—
managing personal behavior or
relationships or interactions
between people (including social
activities, teaching, and following
rules or instructions). Id. at 52.
[i2] responsive to
determining that the rebate is
applicable to the product
information, sending at least a
portion of the product information
and at least a portion of the
consumer information;
Insignificant extra-solution
activity, e.g., mere data-gathering.
Id. at 55 n.31.
[i3] to apply for the rebate; Certain methods of
organizing human activity—
managing personal behavior or
relationships or interactions
between people (including social
activities, teaching, and following
rules or instructions). Id. at 52.
[j] receive a confirmation . . .
that the rebate was processed
successfully;
Insignificant extra-solution
activity, e.g., post-solution activity.
Id. at 55 n.31.
[k] set a follow-up reminder
responsive to receiving the
confirmation . . . ;
Certain methods of
organizing human activity—
managing personal behavior or
relationships or interactions
between people (including social
activities, teaching, and following
rules or instructions). Id. at 52.
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[l] check a status of the rebate
. . . on expiry of the follow-up
reminder; and
Certain methods of
organizing human activity—
managing personal behavior or
relationships or interactions
between people (including social
activities, teaching, and following
rules or instructions). Id.
[m] notify a consumer
associated with the consumer
account of the status of the rebate
responsive to checking the status of
the rebate.
Certain methods of
organizing human activity—
managing personal behavior or
relationships or interactions
between people (including social
activities, teaching, and following
rules or instructions). Id.
In view of Table I, limitations [a]–[c] of claim 1 recite the concept of
managing customer and product information by collecting, comparing, and
storing certain data, which is an abstract idea in the mental processes
grouping; limitations [d]–[h] of claim 1 recite the concept of registering a
warranty for a product by collecting data, recognizing certain data
therefrom, and taking action with respect to the recognized data, which is
also an abstract idea in the mental processes grouping; and limitations [i]–
[m] recite the concept of applying for and managing the status of a rebate
associated with the purchase of the product, which is an abstract idea in the
certain methods of organizing human activity grouping. See, e.g., Spec.
¶¶ 20, 69 (describing the above concepts as features of Appellant’s product
management service).
Appellant argues that the claims “recite technological solutions to a
number of different technical problems,” including “an integrated
management solution in the form of a computerized product management
service to offer a consumer a single point of contact for computerized
warranty protection services, product status services, rebate services, special
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offer services, and other services related to a purchased product.” Appeal
Br. 16. According to Appellant, “this solution allows consumers to bypass
individually interfacing with each system and avoids time consuming rebate
forms, product registration forms, and the like,” and “avoids having different
information on each of the aforementioned services (e.g., from errors in data
entry by the consumer who may have to otherwise separately enter in all the
required information).” Id. at 17. We are not persuaded by Appellant’s
argument.
First, the notion of a one-stop shop for all your product needs
(including purchasing a product, product warranties, rebates, and other
product information) is hardly a new one, as retail department stores in
existence long before the Internet (e.g., Macy’s, Sears) have strived to
provide such services to consumers in an integrated manner. Second, to the
extent claim 1’s use of computing elements facilitates or speeds-up a
consumer’s experience, “relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015).11
Appellant further argues that the claims do not recite an abstract idea
in the mental processes grouping because the recited operations are

11 See also Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”); Alice, 573 U.S. at 224
(concluding that “the use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions” was not an
inventive concept).
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performed using computing elements such as a network-reachable product
management service comprising a processor, a Radio Frequency
Identification (RFID) device, a point of sale terminal, a network, a computer
processor, a warranty registration service, and a rebate service. Reply Br. 4–
6. We are not persuaded by this argument because we find no evidence that
claim 1 cannot practically be performed in the human mind (or manually
with pen and paper) but for the recitation of these generic computer
components. See Rev. Guid., 84 Fed. Reg. at 52 n.14 (“If a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.”). Likewise, the performance of claim 1 using generic computer
components does not preclude claim limitations [i]–[m] from being in the
certain methods of organizing human activity grouping. Id.
Appellant also argues that the Examiner’s analysis overgeneralizes,
and is untethered from, the claims, in violation of Federal Circuit precedent.
Appeal Br. 13–15. Appellant additionally argues that the subject matter in
the SmartGene12 and Classen13 cases cited by the Examiner (see Non-Final
6; Ans. 5) are not similar to claims at issue here. Appeal Br. 15–16. We are
not persuaded by these arguments.
As discussed above, we review the Examiner’s § 101 rejection de
novo in light of the Revised Guidance. Accordingly, such alleged

12 Smart Gene v. Advanced Biological Laboratories, SA, 555 Fed. App’x
950 (Fed. Cir. 2014).
13 Classen Immunotherapies v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011).
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deficiencies in the Examiner’s analysis do not guide our decision whether
the claims are patent-eligible under 35 U.S.C. § 101. And even if Appellant
were correct that SmartGene and Classen differ from Appellant’s claims,
there are many other Federal Circuit cases that identify abstract ideas similar
to the concepts recited in claim 1. See, e.g., Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (“collecting data, . . . recognizing certain data within the
collected data set, and . . . storing that recognized data”); Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed.
Cir. 2013) (“generating tasks [based on] rules . . . to be completed upon the
occurrence of an event”).14
In view of the foregoing, we determine that claim 1 recites a judicial
exception, per se. To the extent that claim 1 recites multiple abstract ideas,
we note that “[a]dding one abstract idea . . . to another abstract idea . . . does
not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017).
Step 2A(ii): Judicial Exception Integrated into a Practical
Application?
If the claims recite a patent-ineligible concept, as we determine above,
we proceed to Step 2A(ii), where we determine whether the recited judicial

14 See also, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011) (“obtain and compare intangible data pertinent
to business risks”); Smart Sys. Innovations, LLC v. Chicago Transit Auth.,
873 F.3d 1364, 1372 (Fed. Cir. 2017) (“collection, storage, and recognition
of data”); FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093
(Fed. Cir. 2016) (“collecting and analyzing information to detect misuse and
notifying a user when misuse is detected”).
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exception is integrated into a practical application of that exception by: (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.
For the following reasons, we determine that Appellant’s claims do
not integrate the judicial exception into a practical application.
MPEP § 2106.05(a) “Improvements to the Functioning of a Computer
or to Any Other Technology or Technical Field.”
“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“any other technology or technical field.” MPEP § 2106.05(a).
Appellant asserts that “[l]ike Amdocs, the present case entails an
unconventional technological solution (the addition of a computerized
process to manage decentralized product data) to a technological problem
(decentralized product data),” and “the claims . . . are tied to specific
structures of various components . . . : namely . . . a network-reachable
product management service comprising a processor[,] . . . [a] point of sale
terminal[,] . . . a Radio Frequency Identification (RFID) device[,] . . . [and] a
warranty registration service (reachable over the network).” Appeal Br. 20–
21 (citing Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016)). But Appellant does not identify—nor do we find—any
persuasive evidence in the claims or Specification to support these
assertions.
Amdocs “entail[ed] an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
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(massive record flows which previously required massive databases)” with
claims “tied to a specific structure of various components (network devices,
gatherers, ISMs, a central event manager, a central database, a user interface
server, and terminals or clients)” such that the components were
“purposefully arrange[d] . . . in a distributed architecture to achieve a
technological solution to a technological problem specific to computer
networks.” Amdocs, 841 F.3d at 1300–1301. By contrast, claim 1 recites a
plurality of generic computing elements for performing generic functions,
such as sending, receiving, and determining data using various computing
devices over a network in the context of registering a product for a product
warranty and managing the status of a rebate for purchasing the product.
We find that such generic recitations of computing elements fail to transform
the recited patent-ineligible concept into an eligible one. See Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25
(Fed. Cir. 2016) (generic computer components, such as an “interface,”
“network,” and “database,” fail to satisfy the inventive concept
requirement); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and a ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”). Furthermore, the Specification also describes these
computing elements and functions in no more than generic terms. See, e.g.,
Spec. ¶¶ 48–64, Figs. 1, 8, 9.
Appellant next argues “the claims go even further, by solving the
additional problems of: entering customer information at a retail POS system
(e.g., slowness) by utilizing RFID information that identifies the customer,
and the problems associated with applying for a rebate (no status
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information).” Id. at 21. This argument is not persuasive. First, even if
claim 1’s use of radio frequency identification (“RFID”) were to quicken the
underlying process, this alone is insufficient to render the claim
patent-eligible. See, e.g., OIP Techs., 788 F.3d at 1363; Bancorp Servs., 687
F.3d at 1278; Alice, 573 U.S. at 224. Second, Appellant presents no
persuasive evidence that the alleged problems associated with applying for a
rebate are in any way unique to or rooted in computer technology. To the
contrary, it appears that these problems are rooted not in technology, but
rather in the age-old need to manage and disseminate information
effectively. See, e.g., Spec. ¶¶ 12, 26, 35, 73, 74, 82–84, 93–94.
Appellant also argues that, like the claims in Amdocs, “the claims in
the present application are narrowly drawn” and do not pre-empt, but rather
go much further than “‘an idea of itself,’ ‘comparing new and stored
information [and using rules to identify options],’ and ‘collecting and
comparing known information.’” Appeal Br. 21. We are not persuaded by
these arguments.
Even though the limitations of claim 1 may be “narrowly drawn,”
limiting an abstract idea to a particular field of use in this manner does not
convert an otherwise ineligible concept into an inventive one. See Rev.
Guid., 84 Fed. Reg. at 55, id. nn. 31–32. In other words, that the claimed
invention may perform a specific set of rules that provides a novel or
non-obvious result does not necessarily render the claim non-abstract. See,
e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(determining for a specific method of advertising and content distribution,
that although “some of the eleven steps were not previously employed in this
art,” that was “not enough—standing alone—to confer patent eligibility
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upon the claims at issue.”); accord Netflix, Inc. v. Rovi Corp., 114 F. Supp.
3d 927, 942 (N.D. Cal. 2015), aff’d 670 F. App’x 704 (Fed. Cir. 2016). And
“[w]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility. . . . Where a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).15
MPEP § 2106.05(b) Particular Machine.
The Bilski16 machine-or-transformation test is only applicable to
method (process) claims on appeal in the present application. Although
method claims 11–20 are computer-implemented using a plurality of
computing elements, these claims do not recite a particular machine. Rather,
the Specification describes the use of such computing elements in no more
than generic terms as a tool for performing existing processes. See, e.g.,
Spec. ¶¶ 47, 52, 53, 57, 59, 64, 79, Fig. 9. “[A]dditional elements that
invoke computers or other machinery merely as a tool to perform an existing
process will generally not amount to significantly more than a judicial
exception.” MPEP 2106.05(b)(II) (citing Versata Development Group v.
SAP America, 793 F.3d 1306, 1335 (Fed. Cir. 2015)).
MPEP § 2106.05(c) Particular Transformation.

15 See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract”).
16 Bilski v. Kappos, 561 U.S. 593 (2010).

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This section of the MPEP guides: “Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing.” “‘Transformation and reduction of an article to a different state or
thing is the clue to the patentability of a process claim that does not include
particular machines.’” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S.
at 70).
Appellant’s claims, which recite receiving, associating, updating,
requesting, selecting, sending, determining, setting, checking, and notifying
operations—do not effect a “transformation or reduction of an article into a
different state or thing constituting patent-eligible subject matter,” but
instead merely create, transmit, store, manipulate or reorganize data. See In
re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en banc), aff’d sub
nom. Bilski, 561 U.S. at 593; see also CyberSource, 654 F.3d at 1375 (“The
mere manipulation or reorganization of data . . . does not satisfy the
transformation prong.”). Applying this guidance here, we determine
Appellant’s claims fail to satisfy the transformation prong of the Bilski
machine-or-transformation test.
MPEP § 2106.05(e) Other Meaningful Limitations.
This section of the MPEP guides:
For a claim that is directed to a judicial exception to be
patent-eligible, it must include additional features to ensure that
the claim describes a process or product that applies the
exception in a meaningful way, such that it is more than a
drafting effort designed to monopolize the exception. The
claim should add meaningful limitations beyond generally
linking the use of the judicial exception to a particular
technological environment to transform the judicial exception
into patent-eligible subject matter.
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See MPEP § 2106.05(e).
“Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment” by reciting “additional
elements such as the steps of installing rubber in a press, closing the mold,
constantly measuring the temperature in the mold, and automatically
opening the press at the proper time,” which “sufficiently limited the use of
the mathematical equation to the practical application of molding rubber
products.” MPEP 2106.05(e) (citing Diehr, 450 U.S. at 177–78, 184, 187.
“In contrast, the claims in Alice Corp. v. CLS Bank International did not
meaningfully limit the abstract idea of mitigating settlement risk” because
“the additional elements such as the data processing system and
communications controllers . . . merely linked the use of the abstract idea to
a particular technological environment (i.e., ‘implementation via
computers’) or were well-understood, routine, conventional activity.” Id.
(citing Alice, 573 U.S. at 226).
We determine that claim 1 does not add “other meaningful
limitations.” As discussed above, the recited computing elements are
nothing more than generic components performing generic functions, which
does not amount to a meaningful limitation that is significantly more than an
abstract idea.
MPEP § 2106.05(f) Mere Instructions to Apply an Exception.
Appellant does not persuasively argue that their claims do any more
than to merely invoke generic computer components merely as a tool in
which the computer instructions apply the judicial exception.
MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
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The claims request, receive, and send data, which are classic examples
of insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963.
MPEP § 2106.05(h) Field of Use and Technological Environment.
“[T]he Supreme Court has stated that, even if a claim does not wholly
pre-empt an abstract idea, it still will not be limited meaningfully if it
contains only insignificant or token pre- or post-solution activity—such as
identifying a relevant audience, a category of use, field of use, or
technological environment.” Ultramercial, 722 F.3d at 1346. Here,
although claim 1 relates to product management and is implemented using
the recited computing elements, we determine that such recitations do no
more than generally link the use of a judicial exception to a particular field
of use or technological environment. See Rev. Guid., 84 Fed. Reg. 55.
Appellant does not present any persuasive evidence otherwise.
In view of the foregoing, we determine the claims are “directed to” a
judicial exception.
Step 2B: Does the Claim Provide an Inventive Concept?
Because the claim has been determined to be directed to a judicial
exception under revised Step 2A, we now evaluate the additional elements
individually and in combination under Step 2B to determine whether they
provide an inventive concept (i.e., whether the additional elements amount
to significantly more than the exception itself). Rev. Guid., 84 Fed. Reg. at
56. It is indicative of the absence of an inventive concept where the claims
simply append well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. Id.
Here,
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[w]hen considered as an ordered combination, the Examiner
does not find any combination of the additional elements that
amounts to more than the sum of the parts. The Examiner finds
that the individual elements of the claims are performing their
intended roles and functions. The processor is used in the
invention in a conventional or expected manner. In most cases,
the additional elements are applied merely to carry out data
processing such as, making a determination, receiving data,
setting reminders, checking status, and sending a notification,
which fall under well-understood, routine, and conventional
functions of generic computers. Therefore, the claimed
interactions of the various generically recited devices lacks an
unconventional step that confines the claim to a particular
useful application in the sense that the result is equivalent to
purely mental activity, e.g., data comparison, determination,
and output.
Non-Final 8. The Examiner explains that “Applicants’ Specification
discloses mere general purpose computing equipment for performing the
steps of the invention (See, e.g., Page 20, paragraph [0060] which discloses
examples of the computer system used to perform the steps of the invention,
each being a generic device).” Id.
We agree with the Examiner. Appellant’s disclosure describes the
claimed computer system consistent with its being “well-understood,
routine, [and] conventional,” at a high level of generality. See, e.g., Spec.
¶¶ 48–64, Figs. 1, 8, 9. For example, the Specification discloses that:
“In example embodiments, one or more computer systems (e.g., a
standalone, client or server computer system) or one or more processors,
including processor, may be configured by software (e.g., an application or
application portion) as a hardware-implemented module that operates to
perform certain operations as described herein” (Spec. ¶ 48);
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“A hardware-implemented module may also comprise programmable
logic or circuitry (e.g., as encompassed within a general-purpose processor
or other programmable processor) that is temporarily configured by software
to perform certain operations” (id. ¶ 49);
“For example, where the hardware-implemented modules comprise a
general-purpose processor configured using software, the general-purpose
processor may be configured as respective different hardware-implemented
modules at different times” (id. ¶ 50); and
“The various operations of example methods described herein may be
performed, at least partially, by one or more processors that are temporarily
configured (e.g., by software) . . . to perform the relevant operations” (id.
¶ 52).
Appellant’s reliance on Berkheimer as evidence of Examiner error is
misplaced. Appeal Br. 18–20 (citing Berkheimer v. HP Inc., 882 F.3d 1360,
1369 (Fed. Cir. 2018)). The exemplary claim limitation at issue in
Berkheimer was “storing a reconciled object structure in the archive without
substantial redundancy,” which the court found was “directed to [an]
arguably unconventional inventive concept described in the [S]pecification.”
881 F.3d at 1370. There was no evidence in the record that this limitation
described well-understood, routine, and conventional technology. Id. at
1368. The court held there was a “genuine issue of material fact” and that
“fact questions created by the [S]pecification’s disclosure” precluded
summary judgment of invalidity under step two of the Alice/Mayo
framework. Id. Here, by contrast, the Examiner has determined—and cited
the Specification as evidence—that the additional technological limitations
of claim 1 are merely generic and perform functions that are
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well-understood, routine, and conventional. And as discussed above, a
complete review of the Specification amply supports such a determination.
Therefore, because the additional elements of claim 1 recite only
well-understood, routine, and conventional technology, specified at a high
level of generality, we determine that claim 1, viewing its limitations “both
individually and as an ordered combination,” does not recite significantly
more than the judicial exception to transform the claim into patent-eligible
subject matter. See Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of claims 1–7, 9–17,
19–27, and 29–33 under 35 U.S.C. § 101.
CLAIMS 1–7, 9–17, 19–27, AND 29–33: OBVIOUSNESS.
Claim 1 recites, in relevant part,
receive warranty registration requirements from the
warranty registration service, the warranty registration
requirements detailing product information and consumer
information to register the product;
select a portion of the product information and a portion
of the consumer information that meets the warranty
registration requirements; [and]
send a product registration request including the portion
of the product information and the portion of the consumer
information over the network to a warranty registration service
to register the product described by the product information for
a product warranty.
The Examiner cites Abreu’s process for determining whether a
product has been recalled for teaching or suggesting these claim limitations.
Non–Final 13–15, 19 (citing Abreu ¶¶ 189–91). The Examiner explains that
“the registration requirements being specific to a warranty is simply
non-functional descriptive labeling,” and that “the data identifying the type
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of registration service is simply a label for a registration service and adds
little, if anything, to the claimed acts or steps and thus does not serve to
distinguish over the prior art.” Id. at 13, 19. According to the Examiner,
[a]ny differences relate[] merely to the meaning and
information conveyed through labels (i.e., the warranty
registration service) which does not explicitly alter or impact
the steps of the method does not patentably distinguish the
claimed invention from the prior art in terms of patentability.
Whether the service is a recall registration service, as taught by
Abreu, or warranty registration service, as claimed, the
functional steps of the method are performed in the exact same
way. The claimed warranty registration service represents
descriptive information in that changing the claimed limitation
to another value not claimed does not alter the outcome of the
claimed method.
Id. at 19; see also Ans. 9–11.
Appellant contends the Examiner erred in determining that the term
“warranty” as in “warranty registration service” is nonfunctional because the
claim limitations at issue “make clear that the types of data and the
messaging that is sent is [sic] important.” Appeal Br. 30. Appellant
explains that “[t]he distinction [between the claim and Abreu] is not just one
of the label ‘warranty’ vs. ‘recall’ – the distinction affects that [sic]
electronic structural elements which impart a physical organization on the
information stored in memory, in terms of both the messages and content of
information sent.” Id. (internal citation and quotations omitted).
Accordingly, Appellant argues the Examiner has not shown that
Abreu’s disclosure of information and procedures to check a product for a
recall satisfies claim 1’s recited steps for registering a warranty for a
product. Id. at 31. Appellant explains that “differences between the
registration of a product and checking for recalls and/or rebates imparts [sic]
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differences in how the computer would be programmed and thus the
structure of the resulting computer.” Id. at 30. For example, according to
Appellant, “different computing devices may be communicated with (e.g.,
see FIG. 1 product status service 1090 vs. warranty registration service
1060), different data may be sent, and the like.” Id. at 31. Appellant further
explains that “the effect is different,” such that “[f]or a product recall, the
end result is an affirmative or negative on whether the product is recalled,”
whereas “[i]n a warranty registration system, the end result is a continuing
legal obligation to provide warranty coverage for the purchaser.” Id.
When determining a claim's patentability, the Board must read the
claim as a whole, considering each and every claim limitation. In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983). A claim limitation is directed to
printed matter “if it claims the content of information.” In re DiStefano, 808
F.3d 845, 848 (Fed. Cir. 2015). Courts have long held that if a limitation
claims (a) printed matter that (b) is not functionally or structurally related to
the physical substrate holding the printed matter, it does not lend any
patentable weight to the patentability analysis. Id. at 1384–85. However,
printed matter that is functionally related to an associated product in a new
or nonobvious way deserves patentable weight. Id. at 1385–87; see also In
re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994).
As an initial matter, we agree with Appellant that the Examiner erred
in determining that the term “warranty” did not deserve patentable weight.
The type of registration requirements—i.e., “warranty”—does appear to be
“content of information,” i.e., printed matter. But, when read in the context
of the claim limitations at issue, the type of registration requirements are
functionally related to Appellant’s claimed system and, thus, the term
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“warranty” deserves patentable weight. Claim 1’s network-reachable
product management service is configured to register the product warranty
based on particular portions of the product and consumer information that
meet the warranty registration requirements received from the warranty
registration service. In other words, the function of registering a product
warranty and the specifics of that warranty depend on—and, thus, may
change based on—the warranty registration requirements.
Having determined the term “warranty” as recited deserves patentable
weight, we agree with Appellant the Examiner erred in finding that Abreu’s
disclosure of information and procedures to check a product for a “recall”
teaches claim 1’s steps for registering a “warranty” for a product. The cited
disclosures Abreu describe a process that checks product identifiers of a
consumer-purchased product against a Card Central Computers (CCC)
database to determine if any of the product identifiers were recalled. See
Abreu ¶¶ 189–91. But Abreu does not describe such a process with respect
to a “warranty” as claimed, nor does the Examiner provide any persuasive
evidence to show that Abreu’s “recall” process teaches registering a
“warranty” for a product as claimed. In fact, the only mention of the term
“warranty” in Abreu distinguishes the process of registering a warranty from
being notified of a recall: “we returned the warranty card over a year ago,
when we purchased the stroller, and still were not notified of the recall.” Id.
¶ 21. Appellant’s Specification also distinguishes the process of registering
a warranty from that of checking for recalls. See, e.g., Spec. ¶¶ 1, 12, 13, 28,
36.
The Examiner further explains that “because Abreu is directed to
registering products, it would have been obvious to a person having ordinary
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skill in the art that warranty information is provided for large subset of
products.” Non-Final 13. But the Examiner does not provide any
persuasive evidence to support this assertion. “[T]he [PTO] must make the
necessary findings” with “adequate ‘evidentiary basis for its findings’” and
articulate logical and rational reasons supporting its decisions. In re
NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Ex parte
Poisson, Appeal No. 2012-011084, at *5 (PTAB Feb. 27, 2015) (“[A]bsent
supporting evidence in the record — of which there is none, the Examiner’s
opinion is an inadequate finding of fact on which to base the . . . analysis.”).
The Examiner adds that “it would be prima facie obvious to substitute the
claimed nonfunctional warranty registration service with a different
nonfunctional descriptive item and obtain the same outcome.” But, as
discussed above, the term “warranty” is functional, and the evidence weighs
against the assertion that “warranty” is a simple substitute for the term
“recall.” Nor does the Examiner present any findings with respect to Levy,
Milovanovic, or Mobil’s SpeedPass, or an obviousness rationale, that cures
the deficiencies discussed above.
Accordingly, constrained by this record, we decline to sustain the
Examiner’s rejection under 35 U.S.C. § 103 of independent claim 1. We
also decline to sustain the § 103 rejection of independent claims 11 and 21,
each of which recites substantially similar limitations for which the
Examiner relies on the same deficient findings and rationale as with claim 1.
We likewise decline to sustain the Examiner’s § 103 rejections of dependent
claims 2–7, 9, 10, 12–17, 19, 20, and 22–27, for which the Examiner
presents no additional findings or rationale that cures the deficiencies in the
rejection of independent claims 1, 11, or 21.
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CONCLUSION
We REVERSE the rejection of claims 1, 11, and 21 under 35 U.S.C. §
112(b).
We AFFIRM the rejection of claims 1–7, 9–17, 19–27, 29–33 under
35 U.S.C. § 101.
We REVERSE the rejection of claims 1–7, 9–17, 19–27, 29–33 under
35 U.S.C. § 103.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 11, 21 112(b) Indefiniteness 1, 11, 21
1–7, 9–17, 19–
27, 29–33
101 Eligibility 1–7, 9–17, 19–
27, 29–33

1–7, 9–17, 19–
27, 29–33
103 Obviousness 1–7, 9–
17, 19–
27, 29–33
Overall
Outcome
1–7, 9–17, 19–
27, 29–33

Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED